USPTO Patents Application 10763747

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
I nilid Stall-, l'atint and Trademark Office

Address: COMMISSIONER FOR PATENTS

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO. CONFIRMATION NO.

10/763.747

01/23/2004

26161 7590 11/21/2008

FISH & RICHARDSON PC
P.O. BOX 1022

MINNEAPOLIS, MN 55440-1022

Ernesto S. Tachauer

05918-320001 /VGCPNo.

WOLLSCHLAGER, JEFFREY MICHAEL

PAPER NUMBER

NOTIFICATION DATE | DELIVERY MODE
11/21/2008 ELECTRONIC

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the

following e-mail address(es):

PATDOCTC@fr.com

PTOL-90A (Rev. 04/07)

l/ffflrC? nVrliUli Otfff Iff ids y

Application No.

10/763,747

Applicant(s)

TACHAUER ET AL.

Examiner

JEFFREY WOLLSCHLAGER

Art Unit

1791

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )KI Responsive to communication(s) filed on 08 September 2008 .
2a )□ This action is FINAL. 2b)^ This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-27 and 50-53 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) |EI Claim(s) 1-27 and 50-53 is/are rejected.

7) 0 Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1) D Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application
Paper No(s)/Mail Date 9/8/08 . 6) □ Other: .

PTOL-T26 d (Rev e 08-06r

Office Action Summary

Part of Paper No./Mail Date 20081 103

Application/Control Number: 10/763,747 Page 2

Art Unit: 1791

DETAILED ACTION

Continued Examination Under 37 CFR 1.114

A request for continued examination under 37 CFR 1.114, including the fee set forth in
37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible
for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has
been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37
CFR 1.114. Applicant's submission filed on September 8, 2008 has been entered.

Response to Amendment

Applicant's amendment to the claims filed September 8, 2008 has been entered. Claims
1, 2, 27, and 53 are currently amended. Claims 1-27 and 50-53 are pending and under
examination.

Claim Rejections - 35 USC § 103

The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all

obviousness rejections set forth in this Office action:

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 1 02 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

This application currently names joint inventors. In considering patentability of the
claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various
claims was commonly owned at the time any inventions covered therein were made absent any
evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out
the inventor and invention dates of each claim that was not commonly owned at the time a later
invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c)
and potential 35 U.S.C. 1 02(e), (f) or (g) prior art under 35 U.S.C. 1 03(a).

Application/Control Number: 10/763,747 Page 3

Art Unit: 1791

Claims 1-18 and 21-25 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Dubowik (US 4,870,725) in view of Neeb et al. (US 2002/0169435).

Regarding claim 1, Dubowik teaches a method of making a bi-stable/pop-through touch
fastener wherein a flexible sheet material and a holding means of unitary construction are
provided with male fastener elements (col. 1, lines 25-37) attached to and extending from an
upper face of the fastener (Abstract; Figure 6; Figure 7). The shape of the fastener of Figures 6
and 7 is achieved through vacuum forming the one unitary piece of plastic (col. 4, lines 9-16).
The examiner notes that vacuum forming is a specific type of thermoforming. Further, while
Dubowik teaches the fastener material is suitably supplied by VELCRO (col. 1 , lines 25-37),
Dubowik does not expressly teach the male fastener elements are molded integrally with the
base of the fastener.

However, Neeb et al. discloses a method of making bi-stable fastener elements wherein
the touch fastener is provided by VELCRO (assignee of the Neeb et al. application) and has its
male fastener components integrally molded with the base of the fastener (Figure 1 9;
paragraphs [0074-0075]). Neeb et al. teach and suggest the specific temperature of rolls (100)
and (102) in the process would be readily optimized to achieve the desired curvature
(paragraphs [0074-0075]).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have employed a fastener with the male fastener elements
molded integrally with the base of the fastener in the method of Dubowik, as suggested by Neeb
et al., because Dubowik teaches that VELCRO is a suitable fastener material and Neeb et al.
discloses a method of making VELCRO for bi-stable fastener applications. Further, Neeb et al.
suggest that fasteners with male fastener elements that are molded integrally with the base of
the fastener are an equivalent alternative form of fasteners employed in the art.

Application/Control Number: 10/763,747 Page 4

Art Unit: 1791

As to claims 2-5, Neeb et al. disclose the same claimed process of producing the
fastener material (Figure 19; paragraphs [0074-0075]).

As to claims 6, 7 and 21 Neeb et al. disclose employment of cross-linkable and
thermoplastic materials, noting, for example, that the hooks and backing are generally produced
from the same material (paragraph [0063, 0070, 0074]; Figures 15, 16A-16C, and 19).

As to claims 8, 9 and 13, Neeb et al. disclose, polyethylene, polyesters, polypropylene,
polyvinyl chloride or other suitable sheet materials (paragraph [0063, 0070]). Dubowik disclose
sheet plastics (col. 3, lines 18-30).

As to claims 10-12, Dubowik disclose a variety of loop engaging heads (col. 1, lines 25-
37) and Neeb et al., which incorporates US 4,794,028 by reference at paragraph [0063]),
disclose a variety of ways to form the loop engageable heads. The examiner further notes that
such means of forming the loop engageable heads (e.g. contact or non-contact methods of
forming the heads; hook shaped mold cavities that form the stem and the hook at the same time
or a subsequent melting/compressing of a portion of an upstanding previously formed stem to
form the head) are well-known and conventional in the art.

As to claim 14, Neeb et al., incorporates Kennedy et al. (US 5,260,015) at paragraph
[0074]. Kennedy et al. teach that foam is a suitable material for forming a base material
(Example XIII).

As to claim 15, Dubowik employ vacuum forming (col. 3, lines 18-30; col. 4, lines 9-16)
to produce concave and convex fasteners (Figure 6 and 7).

As to claims 16-18, Neeb et al. disclose thicknesses between 0.5 mm to about 5 mm
(paragraph [0063]).

As to claim 22, Dubowik disclose and undulating surface (Figure 7).

As to claims 23 and 24, Dubowik disclose a bow shape with a flange (Figure 6).

Application/Control Number: 10/763,747 Page 5

Art Unit: 1791

As to claim 25, Dubowik teach the fastener is vacuum formed to fit into a cavity having a
predetermined shape (Figure 8).

Claims 19 and 20, are rejected under 35 U.S.C. 103(a) as being unpatentable over
Dubowik (US 4,870,725) in view of Neeb et al. (US 2002/0169435), as applied to claims 1-18
and 21-25 above, and further in view of Kurfman (US 4,1 15,619).

As to claims 19 and 20, the combination teaches the method as set forth above.
Further, Dubowik teach vacuum forming the plastic and Neeb et al. teach in general that the
process parameters, including temperature will be optimized/determined for different materials
(paragraph [0075]). However, Dubowik does not expressly disclose what temperature to
employ. However, Kurfman provides disclosure regarding conventional thermoforming
processes, such as vacuum forming, wherein the determination of the thermoforming
temperature is disclosed to be between the glass transition temperature up to and even above
the melting point of the polymer (col. 3, lines 24-60; col. 6, lines 60 - col. 7, lines 22).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have optimized and determined the suitable thermoforming
temperature within the claimed range while practicing the vacuum forming method of Dubowik,
as suggested by Kurfman, since Kurfman teaches the thermoforming temperature is selected
based upon the transition and melting temperature of the polymers.

The examiner further notes that the Kurfman reference is only applied for its teaching
regarding thermoforming plastic materials. Accordingly, Dubowik and Kurfman are analogous
art and are combinable as set forth above.

Application/Control Number: 10/763,747 Page 6

Art Unit: 1791

Claim 26 is rejected under 35 U.S.C. 103(a) as being unpatentable over Dubowik (US
4,870,725) in view of Neeb et al. (US 2002/0169435), as applied to claims 1-18 and 21-25
above, and further in view of Tidemann et al. (US 5,738,81 6).

As to claim 26, the combination teaches the method as set forth above. Dubowik does
not teach forming a framework structure having rectangular apertures. However, Tidemann
teach that it is known in the art to thermoform material into a framework structure having
rectangular apertures (Figure 1; Figure 7).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have modified the method of Dubowik and to have formed a
framework structure having rectangular apertures as suggested by Tidemann since Tidemann
suggest such a shape and structure is known to have desirable commercial properties. Further,
the examiner notes that one having ordinary skill would have readily determined the suitable
shape of the sheet base for various applications from the teaching of Dubowik.

Claim 27 are rejected under 35 U.S.C. 103(a) as being unpatentable over Dubowik (US
4,870,725) in view of Neeb et al. (US 2002/0169435) and further in view of Tidemann et al. (US
5,738,816).

Regarding claim 27, Dubowik teaches a method of making a bi-stable/pop-through touch
fastener wherein a flexible sheet material and a holding means of unitary construction are
provided with male fastener elements (col. 1, lines 25-37) attached to and extending from an
upper face of the fastener (Abstract; Figure 6; Figure 7). The shape of the fastener of Figures 6
and 7 is achieved through vacuum forming the one unitary piece of plastic (col. 4, lines 9-16).
The examiner notes that vacuum forming is a specific type of thermoforming. Further, while
Dubowik teaches the fastener material is suitably supplied by VELCRO (col. 1 , lines 25-37),

Application/Control Number: 10/763,747 Page 7

Art Unit: 1791

Dubowik does not expressly teach the male fastener elements are molded integrally with the
base of the fastener.

However, Neeb et al. discloses a method of making bi-stable fastener elements wherein
the touch fastener is provided by VELCRO (assignee of the Neeb et al. application) and has its
male fastener components integrally molded with the base of the fastener (Figure 19;
paragraphs [0074-0075]).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have employed a fastener with the male fastener elements
molded integrally with the base of the fastener in the method of Dubowik, as suggested by Neeb
et al., because Dubowik teaches that VELCRO is a suitable fastener material and Neeb et al.
discloses a method of making VELCRO for bi-stable fastener applications. Further, Neeb et al.
suggest that fasteners with male fastener elements that are molded integrally with the base of
the fastener are an equivalent alternative form of fastener employed in the art.

Further, Dubowik does not teach continuously thermoforming the bi-stable fastener to
produce a plurality of fasteners. However, Tidemann et al. disclose a continuous thermoforming
process wherein a continuous substrate of material is continuously formed into a desired shape
(Figure 7).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have modified the method of Dubowik and to have
continuously produced a plurality of thermoformed articles as suggested by Tidemann et al. for
the purpose of increasing the productivity and reducing the cost of the process as is routinely
practiced in the art. Further, the examiner notes that modifying a batch process to a continuous
process has been held to only require routine skill.

Application/Control Number: 10/763,747 Page 8

Art Unit: 1791

Claims 50-52 are rejected under 35 U.S.C. 103(a) as being unpatentable over Dubowik
(US 4,870,725) in view of Neeb et al. (US 2002/0169435) as applied to claims 1-18 and 21-25,
and further in view of Kenney et al. (US 5,725,928).

As to claims 50-52, the combination teaches the method as set forth above. Dubowik
does not teach employment of magnetically attractive material in the fastener. However,
Kenney et al. teach a method of forming a touch fastener that includes magnetic attractants
(Abstract).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have modified the method of Dubowik and to have
employed a magnetic attractant, as suggested by Kenney et al., because Kenney et al. suggest
such an attractant makes the product suitable for additional applications. Further, the magnetic
attractants would increase the bond strength between the fastener and certain substrates.

Claim 53 is rejected under 35 U.S.C. 103(a) as being unpatentable over Dubowik (US
4,870,725) in view of Neeb et al. (US 2002/0169435) and Kurfman (US 4,1 15,619).

Regarding claim 53, Dubowik teaches a method of making a bi-stable/pop-through touch
fastener wherein a flexible sheet material and a holding means of unitary construction are
provided with male fastener elements (col. 1, lines 25-37) attached to and extending from an
upper face of the fastener (Abstract; Figure 6; Figure 7). The shape of the fastener of Figures 6
and 7 is achieved through vacuum forming the one unitary piece of plastic (col. 4, lines 9-16).
The examiner notes that vacuum forming is a specific type of thermoforming. Further, while
Dubowik teaches the fastener material is suitably supplied by VELCRO (col. 1, lines 25-37),
Dubowik does not expressly teach the male fastener elements are molded integrally with the
base of the fastener.

Application/Control Number: 10/763,747 Page 9

Art Unit: 1791

However, Neeb et al. discloses a method of making bi-stable fastener elements wherein
the touch fastener is provided by VELCRO (assignee of the Neeb et al. application) and has its
male fastener components integrally molded with the base of the fastener (Figure 19;
paragraphs [0074-0075]).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have employed a fastener with the male fastener elements
molded integrally with the base of the fastener in the method of Dubowik, as suggested by Neeb
et al., because Dubowik teaches that VELCRO is a suitable fastener material and Neeb et al.
discloses a method of making VELCRO for bi-stable fastener applications. Further, Neeb et al.
suggest that fasteners with male fastener elements that are molded integrally with the base of
the fastener are an equivalent alternative form of fastener employed in the art.

Further, Neeb et al. teach in general that the process parameters, including temperature
will be optimized/determined for different materials (paragraph [0075]). However, Dubowik does
not expressly disclose what temperature to employ. However, Kurfman provides disclosure
regarding conventional thermoforming processes, such as vacuum forming, wherein the
determination of the thermoforming temperature is disclosed to be between the glass transition
temperature up to and even above the melting point of the polymer (col. 3, lines 24-60; col. 6,
lines 60 - col. 7, lines 22).

Therefore it would have been prima facie obvious to one having ordinary skill in the art at
the time of the claimed invention to have optimized and determined the suitable thermoforming
temperature within the claimed range while practicing the vacuum forming method of Dubowik,
as suggested by Kurfman, since Kurfman teaches the thermoforming temperature is selected
based upon the transition and melting temperature of the polymers.

Application/Control Number: 10/763,747 Page 10

Art Unit: 1791

The examiner further notes that the Kurfman reference is only applied for its teaching
regarding thermoforming plastic materials. Accordingly, Dubowik and Kurfman are analogous
art and are combinable as set forth above.

Response to Arguments

Applicant's arguments filed September 8, 2008 regarding the rejection based upon the
Miller et al. reference and the 35 USC 1 12 rejections have been fully considered, but they are
moot in view of the amendment to the claims. Applicant's arguments filed September 8, 2008
regarding the rejection of Dubowik in view of Neeb et al. have been fully considered, but they
are not persuasive.

Applicant argues that the method of Neeb et al. is not a thermoforming method as set
forth in the instant specification. This argument is not persuasive. The examiner submits that
the forming/shaping with heat of the already produced sheet of Neeb et al. with molding rolls
(100) and (102) is quite reasonably understood to be a thermoforming method. Additionally, the
examiner notes that heated roll (100) will heat the sheet prior to entering the mold area between
rolls (100) and (102).

Further, in response to applicant's argument that the references fail to show certain
features of applicant's invention, it is noted that the features upon which applicant relies (i.e.,
some specific thermoforming limitation) are not recited in the rejected claim(s). Although the
claims are interpreted in light of the specification, limitations from the specification are not read
into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).

Further, regarding the limitation directed to the specific temperature relationship between
the top and bottom surface. Neeb et al. set forth that the temperature of the curvature setting
process will be optimized by the artisan to achieve the desired curvature (col. 9, line 45-col. 10,
line 5). As such, Neeb et al. establish temperature as a result effective variable.

Application/Control Number: 10/763,747 Page 11

Art Unit: 1791

Additionally, regarding claim 5, applicant argues that the combination does not teach a
buffer region. This argument is not persuasive. The examiner submits that the region between
stripping roll (98) and roll (100) is reasonably understood to form a "buffer region".

Conclusion

Any inquiry concerning this communication or earlier communications from the examiner
should be directed to JEFFREY WOLLSCHLAGER whose telephone number is (571)272-8937.
The examiner can normally be reached on Monday - Thursday 6:45 - 4:15, alternating Fridays.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Christina Johnson can be reached on 571-272-1176. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
would like assistance from a USPTO Customer Service Representative or access to the
automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/J. W./

Examiner, Art Unit 1791
November 19, 2008

/Monica A Huson/

Primary Examiner, Art Unit 1791